In rejecting claim 1 under 35 U.S.C § 102, the Office Action concedes that the Smith patent does not expressly or impliedly teach the aforementioned claim feature of a widget. (Office Action, page 3). Nonetheless, the Office rejects claim 1, contending that the feature of a widget is inherently taught by Smith. Applicant respectfully traverses this rejection at least because the Office has not met its burden to fully develop reasons supporting its reliance on the doctrine of inherency.
The Office always bears the initial burden to develop reasons supporting a reliance on inherency. (MPEP 2112 (IV)). To satisfy this burden, the Office must identify some basis in fact or articulate some reasoning at least tending to show that allegedly inherent subject matter necessarily (i.e., inevitability) flows from cited art. Indeed, the MPEP expressly instructs that:
“In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Further, since a basis in fact and technical reasoning is required when inherency is invoked, a failure to provide such evidence or rationale is fatal to the reliance on this doctrine. This is only logical since evidence “must make clear” that the allegedly inherent subject matter is necessarily present in (i.e., necessarily flows from) the disclosure of cited art. (MPEP 2112).
A review of page 3 of the Office Action reveals the absence of the required rationale or evidence at least tending to show that the feature of a widget inevitably flows from the disclosures of Smith patent. Indeed, the Office Action merely asserts that a red widget is inherently present in the Smith patent. (Office Action, page 3). This naked assertion, a mere conclusory statement, cannot reasonably be said to be a development of any reason supporting the Office’s reliance on inherency. Consequently, the Office Action’s reliance on inherency is unsupported and thus improper.
In sum, the Office Action concedes that the Smith patent does not teach the feature of claim 1 of a widget and any reliance on the doctrine of inherency to provide this necessary teaching is improper.
2. A Substantive Response
In rejecting claim 1, the Office Action concedes that the Smith patent does not expressly or impliedly teach the aforementioned claim feature of a red widget. (Office Action, page 3). Nonetheless, the Office rejects claim 1 under 35 U.S.C. § 102, contending that a red widget is inherent from the disclosures of the Smith patent. This contention is respectfully traversed, at least because express teachings of the Smith patent preclude reliance on the doctrine of inherency, as a matter of law.
It is well settled that subject matter is inherent only when extrinsic evidence makes it clear that the subject matter necessarily (i.e., inevitably) flows from a disclosure of cited art. (MPEP 2112). This requirement is a prerequisite to invoking the doctrine of inherency and cannot be avoided. Consequently, inherency may never be established by mere probabilities or even possibilities and the mere fact that a certain thing may be present (or may result) is always insufficient. (MPEP 2112).
A review of the Smith patent reveals no less than three separate teachings that the Smith widget cannot be red. Applicant respectfully submits that these express teachings so heavily weigh against the inevitable presence of a red widget that they preclude reliance on the doctrine of inherency as a matter of law. Stated another way, the presence of these express teachings means that the subject matter alleged by the Office Action to be inherent can never reasonably be said to necessarily flow from the Smith patent. Thus, the Office’s current reliance on inherency can never satisfy the standard set forth in MPEP § 2112 for proper reliance on inherency.
From Patently Defined, date: Sept. 17th, 2008. Here.